WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-aventis v. Bronco Ltd
Case No. D2007-0265
1. The Parties
The Complainant is Sanofi-aventis, Paris, France, represented by Armfelt & Associés Selarl, France.
The Respondent is Bronco Ltd, Ripon, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <i-acomplia.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2007. On February 23, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On February 24, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2007.
The Center appointed Richard Hill as the sole panelist in this matter on April 18, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant owns various registered and common law trademarks for the string ACOMPLIA.
The Complainant uses those marks to market a pharmaceutical product.
The Respondent is using the contested domain name to point to a web site that contains referral links to merchants offering various prescription pharmaceutical products, including the products marketed by the Complainant.
The Respondent does not have any licenses or other authorization from the Complainant to use the Complainant’s marks.
The Respondent obtains payments from the referral links.
5. Parties’ Contentions
The Complainant is a very large and well-known multinational pharmaceutical company present in more than 100 countries across 5 continents.
The Complainant has filed trademark applications for ACOMPLIA in more than 100 countries and has obtained registered trademark rights in many countries. The Complainant also registered numerous domain names worldwide containing the ACOMPLIA trademark, for example <acomplia.com>, < acomplia.fr>, < acomplia.us>.
The Respondent’s registration consists of the use of the Complainant’s trademark in addition with the previx “I-” and the gTLDs “.com”.
A wide variety of panelists have considered that the addition of generic and/or descriptive words to trademarks was not sufficient to escape the finding of similarity and does not change the overall impression of the designations as being connected to the Complainant (see Sanofi-Aventis v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661, Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045, Telstra Corporation Ltd v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; Pepsico Inc v. Pepsi SRL and EMS COMPUTER INDUSTRY, WIPO Case No. D2003-0696; Pepsico Inc v. Diabetes Home care and DHC services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha v. Kil Inja, WIPO Case No. D2000-1409; America Online Inc v. Chris Hoffman, WIPO Case No. D2001-1184).
There is no license, consent or other right by which the Respondent would have been entitled to register or use the domain name with the Complainant’s trademark ACOMPLIA with the adjunction of the prefix “I-”.
There is no doubt that the Respondent is aware that ACOMPLIA corresponds to a medical product and therefore to a trademark in respect of the content of its website.
Therefore, the Respondent’s use does not satisfy the test for bona fide use established in prior WIPO decisions.
The disputed domain name used by the Respondent, leads to (i) an active web site where information about ACOMPLIA product is provided, but also to (ii) websites, where ACOMPLIA products or counterfeiting products or placebo products and others competitors products mainly related to the treatment of the obesity are offered for sale.
The Respondent would not have registered the disputed domain name if he was not aware that ACOMPLIA is a revolutionary drug against obesity, and was ready to be put on the market.
By using its website under the disputed domain name to sell the Complainant’s products without any authorisation, the Respondent is intentionally attempting for a commercial purpose to attract internet users to the Respondent’s website, and creates a likelihood of confusion with the Complainant’s trademark. This is in violation of the Policy.
Indeed, Paragraph 4(b)(iv) of the Policy lists as one of the typical situation as evidence of bad faith the fact of “ using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.”
In fact, the Respondent links from the website at the disputed domain name to “www.ukmedix.co.uk/acomplia” which provides information and offers to sell ACOMPLIA products or counterfeiting products or placebo products and other competitors products mainly related to the treatment of the obesity. One can easily assume that the Respondent does not insert for free such links which are redirecting the Internet user to websites where competitor’s products for the treatment of obesity are put on sale. The Respondent provided these links with the clear intention of commercial gain.
Moreover, any Internet user who will try to connect to this website will believe that the Respondent’s pharmaceutical product medicine is available in all countries without any medical control, whereas, (i) it has not been yet launched in all countries as this medicine has not been granted with all the administrative market authorization required, (ii) and can only be obtained by medical prescription.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The contested domain name is obviously confusingly similar to the Complainant’s mark ACOMPLIA. The Panel notes the cases cited by the Complainant to support this point and agrees that those citations are appropriate.
B. Rights or Legitimate Interests
The Respondent does not have any license or other authorization to use the Complainant’s mark. It is using the disputed domain name to operate a web site that contains referrals to merchants offering the sale of various pharmaceutical products, including the Complainant’s products. The Respondent appears to obtain revenue from the referrals.
The Panel finds that Respondent is redirecting Internet users interested in Complainant’s products and services to its own website for commercial gain and that such use does not fall within the parameters of a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy. See The Royal Bank of Scot. Group v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
C. Registered and Used in Bad Faith
It is clear that the Respondent was aware of the Complainant’s marks when it registered and started using the disputed domain name. Indeed the print outs provided by the Complainant of the web site at the disputed domain name contain repeated and prominent mentions of the Complainant’s mark, of the Complainant’s product, and even of the Complainant’s company name (Sanofi-Aventis).
The Respondent (who did not reply) has not presented any plausible explanation for its use of the Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that the Respondent did not have a legitimate use in mind when it registered the disputed domain name.
Indeed the Respondent’s actual use of the disputed domain name (as noted above) is clearly not bona fide, because the Respondent operates a web site that contains referrals to merchants that sell the Complainant’s product (and other prescription medicine). This indicates that the Respondent has registered and is using the disputed domain name to take advantage of the confusing similarity between the disputed domain name and Complainant’s mark in order to profit from the goodwill associated with the mark in bad faith under paragraph 4(b)(iv) of the Policy. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum January 4, 2007) (holding that the respondent’s use of the disputed domain names to maintain pay-per-click sites displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy paragraph 4(b)(iv)).
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <i-acomplia.com> be transferred to the Complainant.
Dated: May 2, 2007